04/17/2013

Attorney
Brian A. Hall has successfully defended a UDRP filed against its client
concerning the domain names organizingforaction.com and organizingforaction.org.
The UDRP Decision to deny the claim matches another
earlier, although recent, decision that reached the same result concerning
the domain name organizingforaction.net.
While the two UDRPs were separate, involving separate Respondents,
separate facts and allegations, and separate representation, the decisions to
deny the Complainant's Complaint were both based upon Complainant's failure to
establish trademark rights in the phrase "Organizing for Action." Complainant is
a non-profit organization associated with the Democratic Party and supported by
President Obama. Complainant currently operates from President Obama's
primary website, barackobama.com, There
has already been significant press concerning the background related to the
Complainant and these domain name disputes. See here, here, and here.

Both panels found that Complainant failed to establish common law trademark
rights in the phrase that it first used on or around January 18, 2013,
which coincided with the domain registrations. Moreover, both panels did
not comment upon the remaining two factors of the UDRP, namely whether
Respondent had legitimate rights and interests in the disputed domains and
whether Respondent registered and used the disputed domains in bad faith.
Nevertheless, both Complaints were denied, although one was "denied
without prejudice," which is something rarely seen in UDRP decisions and
unclear as to its meaning given that a finding of lack of trademark rights at
the time of Respondent's registration effectively means that Respondent could
not have registered the domain in bad faith, a prerequisite for a successful
UDRP. Even if common law trademark rights were not ultimately disclosed,
if Complainant were at a later time able to establish secondary meaning, it
would still have to prove bad faith cybersquatting.

These
decisions confirm the importance of, and sometimes difficulty with,
establishing common law trademark rights so quickly following first use,
especially if the domain name registration coincides with such first use.
They also confirm the different styles of panelists in rendering
decisions, even when such decision is based upon the same conclusion. Nonetheless,
two separate panels have spoken, and they agreed that none of the domains
should be transferred to the "District of Columbia
non-profit organization formed January 18, 2013 with the object of advocating
for certain public and political policy issues."

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